Trademark Opposition in Costa Rica: The Two-Month Window

Trademark Opposition in Costa Rica: The Two-Month Window That Decides Everything

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How trademark opposition in Costa Rica works — and why the deadline is absolute

Every trademark application in Costa Rica is published so that third parties can challenge it. That challenge is called a trademark opposition, and the window to file one is exactly two months from the first publication in the official gazette. Miss it and the mark proceeds to registration unchallenged. File within it, and the applicant must respond or lose by default. Under Article 16 of Law 7978, trademark opposition in Costa Rica is the only moment between filing and registration when an outsider can intervene — and it is governed by strict, non-negotiable deadlines.

The two-month opposition window

After a trademark application passes the Registry’s initial examination, it is published three times in the official gazette (La Gaceta) at the applicant’s expense (Article 15). From the date of the first publication, any interested party has exactly two months to file an opposition (Article 16).

This window is absolute. There is no extension, no late filing, and no second chance. Once the two months pass without an opposition, the application proceeds toward registration. For brand owners who monitor the gazette for conflicting filings, the two-month clock is the only moment to act.

Grounds for opposing a trademark in Costa Rica

Article 8 of Law 7978 lists the grounds on which a mark can be refused because it conflicts with third-party rights. These are also the grounds on which an opposition is typically built:

• Confusing similarity. The applied-for mark is identical or confusingly similar to a mark already registered or applied for by a third party, covering the same or related goods or services.
• Prior use. The opponent has used an identical or similar mark in good faith since an earlier date, even if it is not registered.
• Well-known marks. The applied-for mark reproduces or imitates a well-known mark, regardless of the goods or services, if it could create confusion or take unfair advantage.
• Trade names. The mark conflicts with a commercial name used by a third party since an earlier date.
• Personal rights. The mark uses the name, likeness, or other personal attribute of a third party without authorization.
• Copyright or industrial property. The mark infringes an existing copyright or other industrial property right.

How to file a trademark opposition in Costa Rica

Filing an opposition requires more than a letter of objection. Article 16 sets out the requirements:

1. File within the two-month window from the first publication. There is no grace period.
2. State the legal and factual grounds. The opposition must explain why the mark should not be registered, citing the specific legal basis (typically Article 8).
3. Attach or offer evidence. Supporting evidence should be filed with the opposition. If it is not, there is a 30-day window to submit it afterwards.
4. Foreign opponents need local counsel. As with all proceedings before the Registry, a party without domicile in Costa Rica must act through a local representative (Article 442).

Responding to an opposition filed against your mark

If your trademark application is opposed, the Registry notifies you and gives you two months to respond. This is your only opportunity to defend the application before the Registry decides.

Failing to respond does not automatically kill the application — Article 16 states that the Registry will resolve the matter even without a response. However, in practice, an unopposed opposition almost always succeeds. Responding is not optional if you want to keep the mark.

Your response should address each of the opponent’s arguments with counter-evidence and legal reasoning. Two common and effective strategies:

• Distinguish the marks. Show that despite superficial similarity, the marks are different enough in appearance, sound, or meaning — or cover different goods — that confusion is unlikely.
• Challenge the opponent’s standing. If the opposing mark has not been used in Costa Rica for five years, you can request its cancellation for non-use — removing the basis of the opposition entirely.

Opposition based on an unregistered mark

Article 17 creates a specific path for opponents who rely on prior use of an unregistered mark. This is not a loophole — it is a structured process with its own requirements:

• The opponent must file their own trademark application within 15 days of filing the opposition. Without this, the opposition is declared inadmissible.
• The Registry joins both files and resolves them together.
• If the opponent proves prior use and meets all registration requirements, they are granted the registration — and the conflicting application may be denied or limited.
• The Registry can also grant both marks with limitations on the list of goods or services for each, to avoid confusion.

This provision reflects Costa Rica’s mixed priority system: registration matters, but genuine prior use is protected. It is the same principle from Article 4’s mixed priority rule.

How the Registry resolves trademark oppositions in Costa Rica

Under Article 18, when one or more oppositions have been filed, the Registry resolves them together with the main application in a single reasoned decision. The possible outcomes are:

• Full denial. The application is rejected because the opposition is upheld.
• Full grant. The opposition is rejected and the mark proceeds to registration as filed.
• Partial grant. The mark is registered, but only for some of the goods or services originally claimed — the ones that do not conflict. This is a practical compromise the Registry uses to allow coexistence where full confusion is avoidable.

Frequently asked questions

How long do I have to oppose a trademark in Costa Rica?

Two months from the first publication in La Gaceta. There is no extension or grace period (Article 16, Law 7978).

Can I oppose a trademark if I don’t have a registered mark?

Yes. Under Article 17, you can oppose based on prior use of an unregistered mark — but you must file your own trademark application within 15 days of the opposition.

What happens if I don’t respond to an opposition?

The Registry decides anyway. In practice, an unopposed opposition almost always succeeds, so responding is essential.

Can the Registry grant a mark partially?

Yes. Under Article 18, the Registry can grant registration for only some goods or services — the ones that do not create confusion with the opposing mark.

Can I counter an opposition by arguing the opposing mark is unused?

Yes. If the opposing mark has not been used in Costa Rica for five years, you can request its cancellation for non-use under Article 39, removing the basis of the opposition.

Does a foreign company need local counsel to file an opposition?

Yes. Article 442 requires any party without domicile in Costa Rica to act through a local representative for all proceedings before the Registry.

Related guides

• Trademark Registration in Costa Rica: The Local Filing Rule
• Trademark Cancellation for Non-Use
• Trademark Renewal: Deadlines and Process
• Trademark Enforcement: Anti-Counterfeiting Guide

This article is general information, not legal advice. Source: Law No. 7978, Articles 8, 15, 16, 17, 18, 442. Consult qualified counsel before making decisions.